WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Truong Bui, truongbui1991
Case No. D2019-2894
1. The Parties
The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Truong Bui, truongbui1991, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <legostore.best> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2019. On November 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 28, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 3, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2019.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 3, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the proceedings is English.
4. Factual Background
The Complainant is LEGO Juris A/S, a worldwide known toymaker. LEGO branded products are marketed and sold for decades in more than 130 countries worldwide, through authorized licensees.
The Complainant holds numerous trademark registrations for LEGO, such as the following:
- the Viet Nam trademark registration number 60988, filed on October 31, 2003 and registered on March 14, 2005 for goods and services in classes 9, 16, 20, 25, and 41; and
- the United States of America trademark no. 1018875 filed on September 17, 1974 and registered on August 26, 1975 for goods in class 28.
The LEGO trademark is among the best known trademarks in the world, its well-known status being confirmed by numerous tops and rankings, such as the Consumer Superbrands 2018 listing LEGO to various category winners, the 2018 Global RepTrak Top 10 Companies published on March 15, 2018 by the Reputation Institute, as well as by numerous previous UDRP proceedings involving the Complainant.
The Complainant owns more than 5,000 domain names incorporating the mark LEGO, the main one being <lego.com>. According to its policy, the Complainant should own all domain names containing LEGO trademark.
The disputed domain name <legostore.best> was registered on September 25, 2019. At the time of filing the Complaint, the disputed domain name resolved to an inactive Shopify web page.
Prior to the present proceedings, on October 15, 2019 the Complainant sent a cease and desist letter to the Respondent, followed by several reminders. No reaction was received to either letter.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark LEGO, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds rights in the LEGO trademark.
The disputed domain name <legostore.best> incorporates the Complainant’s trademark LEGO with an additional dictionary word. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (wheter descriptive pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the Top-Level Domain (“TLD”) (e.g.,“.best”, “club”, “actor”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name <legostore.best> is confusingly similar to the Complainant’s trademark LEGO, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark LEGO, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
The Respondent registered the disputed domain name incorporating a worldwide well-known third party trademark, without any authorization and keeps it inactive.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark rights for LEGO since at least 1964. Due to its extensive use and marketing, the LEGO trademark has become highly distinctive and among the best known trademarks in the world.
The disputed domain name was created in 2019 and incorporates the Complainant’s mark with a dictionary term.
For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint the disputed domain name was not actively used.
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use. See section 3.3 of the WIPO Overview 3.0.
The Complainant’s trademark is well-known worldwide for decades and there is no plausible or logic for the Respondent to choose and register such name other than to create confusion or association with the Complainant and its LEGO mark.
Further, the Respondent registered the disputed domain name under a privacy service and refused to participate in the present proceedings, or to answer to the Complainant’s letters sent prior to commencing the present proceedings in order to put forward any arguments in its favor.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <legostore.best> be transferred to the Complainant.
Date: January 15, 2020